Floor Covering Associates, Inc. v. Eglis Ginters / Sociotechnical Systems OU
Claim Number: FA2106001950380
Complainant is Floor Covering Associates, Inc. (“Complainant”), represented by Jennifer Mikulina, Illinois, USA. Respondent is Eglis Ginters / Sociotechnical Systems OU (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-floor.net>, registered with Wix.com Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2021; the Forum received payment on June 9, 2021.
On June 15, 2021, Wix.com Ltd. confirmed by e-mail to the Forum that the <e-floor.net> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@e-floor.net. Also on June 16, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in EFLOORS.COM. Complainant submits that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells carpeting, flooring, rugs, and related goods by reference to the name, EFLOORS.COM;
2. the trademark EFLOORS.COM is registered with the United States Patent and Trademark Office (“USPTO”) as Regn. No. 4,450,878 from December 17, 2013, but that registration stands in the name of another company, Superior Value Products Inc.;
3. the disputed domain name was registered on March 17, 2021 but there is no evidence it has been used; and
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. There is an assertion of long-term use of EFLOORS.COM as a trademark but insufficient evidence to support the bald claim of unregistered (common law) trademark rights made in the Complaint. Nonetheless, it is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provides evidence of a USPTO registration for the trademark EFLOORS.COM but the registration is not in the name of Complainant. As indicated above, the registered owner appears to be Superior Value Products Inc. The Panel sees in the Complaint evidence of a Canadian trademark registration for EFLOORS.COM but it also appears to be registered to Superior Value Products Inc..
There is no explanation as to how Complainant might be entitled to claim trademark rights based on either of these registrations. The Panel is entitled to deny the Complaint at this point for failure to establish the first element of the Policy. However, absent any objection to entitlement by Respondent the Panel observes that Complainant and Superior Value Products Inc. share the same address and are incorporated in the same State. The Panel makes the reasonable inference that a change of name has occurred and has not been recorded, or evidence of recording has not been provided, and that Complainant is the actual or beneficial owner of the registration. The Panel is prepared to find that Complainant has rights in the trademark EFLOORS.COM by reason of registration.
The loose assembly of the Complaint continues when it comes to the assertion of confusing similarity, stating that the domain name “is confusingly similar to Complainant’s Marks and domain names. The Domain Name incorporates the majority of Complainant’s Marks and merely adds a hyphen and deletes an ‘s’.” The reference to Complainant’s domain names is an irrelevancy and whereas the Complaint had hitherto made some effort to show rights in EFLOORS.COM, the argument now appears to rely on similarity of the domain name to an agglomeration of Complainant’s marks, earlier listed as “EFLOORS.COM®, EFLOORS.COM & Design, and EFLOORS OUTLET & Design”. There is no proof of trademark rights in either of the Design marks, nor for that matter is any representation of the Design(s) provided. Assuming that it may be enough to concentrate on the registered mark, EFLOORS.COM, the Panel was confounded again by the statement that the disputed domain name “merely adds a hyphen and deletes an ‘s’”, when in fact it also omits the element “.COM” from the registered mark and replaces it with the gTLD, “.net”.
Despite the low quality of the submissions, the Panel is able to reason for itself that the domain name bears an overall resemblance to the trademark and that, notwithstanding the minor and non-distinctive alterations to the trademark – hyphenation of the letter “e” from the word “floors” consistent with e-commerce construction; deletion of the letter “s” reducing the plural to the singular; and omission of that part of the registered mark equivalent to a gTLD and substitution of a different, actual gTLD – the altered trademark remains the recognizable part of the disputed domain name. The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[ii].
Accordingly, the first element of the Policy is established.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iii].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service but in consequence of these proceedings the Registrar disclosed the name of the holder as “Eglis Ginters / Sociotechnical Systems OU.” That name does not provide any prima facie evidence that Respondent might be known by the disputed domain name. There is nothing else to suggest that Respondent is commonly known by the domain name and there is no evidence it has trademark rights of its own.
Complainant provides evidence that the domain name resolves to an inactive website and absent anything more there is nothing to show that the domain name has been used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name[iv].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Once more the Complaint is poorly applied to the facts and the Panel is left to reason the matter for itself. On the evidence, none of the paragraph 4(b) scenarios has direct application and so the questions are whether the evidence provides adequate proof of registration in bad faith and use in bad faith since, as noted already, there is no evidence of use of the domain name.
The Complaint attempts to rely on the largely discredited argument that a respondent in UDRP proceedings is on constructive notice of a USPTO registration[v]. It also argues that Respondent would have been aware of Complainant’s business and trademark by reason of the use of that trademark over two decades. It makes the unsubstantiated claim that:
“Complainant’s Marks have acquired distinctiveness through Complainant’s substantial, continuous, and exclusive use of the Marks in connection with Complainant’s goods and services since 1999.”
In connection with paragraph 4(a)(i) of the Policy, the Panel was not prepared to find common law rights without better evidence. However, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[vi] and so, for example, there is corroborating evidence of the claim to use of EFLOORS.COM since 1999 in the USPTO registration which shows that date as the first use in commerce date. So, whilst constructive knowledge is insufficient for a finding of bad faith under this aspect of the Policy, actual knowledge may be reasonably inferred where the trademark at issue has some level of notoriety[vii]. Further, whilst Complainant’s domain names were irrelevant to the determination of paragraph 4(a)(i) of the Policy, their existence forms part of the matrix of facts relevant to the issue of bad faith. The Panel observes that Complainant owns the following domain names:
e‐floors.co
e‐floors.com
e‐floors.info
e‐floors.mobi
e‐floors.net
e‐floors.org
efloor.biz
efloor.org
efloors.biz
efloors.co
efloors.com
efloors.mobi
efloors.org
efloors.today
efloors.us
efloors.ws
efloorsblog.com
efloorshardwood.com
efloorslaminate.com
efloorsofhouston.com
efloorsoutlet.com
efloorspro.com
efloorsrugs.com
The Panel notes the pattern of these domain names and the fact that one, e‐floors.net, differs from the disputed domain name by a single letter. Finally, the Panel reminds itself that the Respondent’s identity was shielded by a privacy service. Taken together, the balance of the evidence justifies the Panel’s finding of registration in bad faith.
This leaves to be considered use in bad faith where there is no use and the question of whether it can be said that a domain name registered not four months ago can be passively held in bad faith in line with the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The facts of that case are not so remote in so far as the complainant there owned, at the time, the domain names, telstra.com, telstra.net, telstra.com.au, telstra-inc.com and telstrainc.com and the disputed domain name was <telstra.org>. The Panelist posed the question: “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, concluding that “the question can only be answered in respect of the particular facts of a specific case”, whereafter he paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant’s rights.
Not all the circumstances coincide – likely, there is a lesser reputation in EFLOORS.COM, and the generic character of the word “floor”/ “floors” permits the possibility of some legitimate use, but there is just enough in this Panel’s assessment to draw a finding of passive holding and “use” in bad faith.
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Complainant has done little to assist itself, but the Panel nevertheless finds on the evidence all three elements required under the ICANN Policy established and so concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-floor.net> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: July 14, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Forum Jan. 11, 2001) finding <nationalgeographics.com> confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
[v] See, for example, The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith.").
[vi] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[vii] See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
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